Yellow Book V Brandeberry Opinion

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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION AT DAYTON
YELLOW BOOK USA, INC., et al.,

Case No. 3:10-CV-025
Plaintiffs,
Judge Thomas M. Rose
-v-
STEVEN M. BRANDEBERRY,
Defendant.
______________________________________________________________________________
ENTRY AND ORDER GRANTING BRANDEBERRY’S MOTION FOR

SUMMARY JUDGMENT(Doc. #41) AND GRANTING IN PART AND
OVERRULING IN PART YELLOW BOOK’S MOTION FOR PARTIAL
SUMMARY JUDGMENT (Doc. #47)
______________________________________________________________________________
This is a battle over who, if anyone, has the exclusive right to use the AMTEL name,
marks and related assets to publish yellow-pages telephone directories in several counties in
West Central Ohio. The Plaintiffs in this matter are Yellow Book USA, Inc. and Yellow Book
Sales and Distribution Company, Inc. and are collectively referred to herein as “Yellow Book.”
The Defendants are Steven M. Brandeberry (“Brandeberry”) and American Telephone
Directories, Inc. (“American Telephone”).
Yellow Book has brought six (6) claims for relief against both Defendants. The First
Claim for Relief is for trademark infringement and false designation and description in violation
of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(B). The Second Claim for Relief is
for deceptive trade practices in violation of Ohio Rev. Code § 4165.02. The Third Claim for
Relief is for common law trademark infringement. The Fourth Claim for Relief is for
misappropriation of trade secrets in violation of the Ohio Uniform Trade Secrets Act, Ohio Rev.
Code § 1333.61 et seq. The Fifth Claim for Relief is for tortious interference with existing and
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prospective business relations and the Sixth Claim for Relief is for unjust enrichment.
Brandeberry’s Answer to the original Complaint includes one counterclaim for wilfully making
false statements.
PROCEDURAL BACKGROUND
Yellow Book’s initial Complaint was against Brandeberry only and was filed on January
22, 2010. (Doc. #1.) Brandeberry answered and brought a counterclaim for the willful making of
false statements. (Doc. #9.)
On March 3, 2010, Brandeberry submitted a Motion for Summary Judgment (doc. #13)
which was overruled by the Court (doc. #17). The Preliminary Pretrial Conference was held on
May 11, 2010. On May 12, 2010, Brandeberry submitted his second Motion for Summary
Judgment (doc. #19) which was also overruled by the Court (doc. #22).
Next, Yellow Book was granted leave to file an amended complaint, which it did. (Doc.
#25.) This Amended Complaint is the same as Yellow Book’s original Complaint but adds
American Telephone as a Defendant. Brandeberry and American Telephone answered (docs. #29
and 30), but no mention is made of a counterclaim.
Yellow Book has also received leave of Court to file two Supplemental Amended
Complaints to add facts regarding the publication of telephone directories in Union and Logan
Counties in Ohio. Brandeberry has answered the Supplemental First Amended Complaint
without making a counterclaim. Finally, the Parties have agreed that the Amended Complaint is
the operative complaint and discovery on the two Supplemental Complaints will be held in
abeyance until the pending Motions for Summary Judgment are decided.
Now before the Court is a Third Motion for Summary Judgment filed by Brandeberry.
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(Doc. #41.) Yellow Book has responded and the time has run and Brandeberry has not replied.
Also before the Court is a Motion for Partial Summary Judgment filed by Yellow Book.
(Doc. #47.) Brandeberry has responded and Yellow Book has replied to this Motion.
Yellow Book has also filed a Motion for Summary Judgment on Brandeberry’s
Counterclaim. (Doc. #48). This Motion will be considered in a separate entry.
FACTUAL BACKGROUND
The Parties
Yellow Book is an independent publisher of print and Internet-based yellow-pages
directories in the State of Ohio and elsewhere throughout the United States. (Affidavit of Maria
Mitchell (“Mitchell Aff.”) ¶ 2 Mar. 25, 2010.) The company’s online directory, yellowbook.com,
reaches millions of users via computers and mobile phones. (Id. at ¶ 3.) Since 2007, Yellow
Book has published a yellow-pages directory in Champaign County, Logan County, Union
County and Madison County, all in Ohio, under the name “Amtel Directories.” (Id. at ¶ 4.)
From 1982 to 1994, Herb Burkhalter (“Burkhalter”) marketed a yellow page directory in
Champaign county known as the AM/TEL Directory. (Deposition of Steven M. Brandeberry
(“Brandeberry Aff.”) 35, 38 June 6, 2010.) The name AM/TEL was derived from the term “Area
Marketing Telephone Directory. (Id. at 35.)
In 1994, Burkhalter approached Brandeberry about purchasing Burkhalter’s Champaign
County AM/TEL directory. (Id. at 36-37.) The parties began negotiations, and on May 6, 1994,
Brandeberry and American Telephone entered into a “Corporate Asset Purchase Agreement”
with Burkhalter. (Id. at 35, 42-43, Ex. 3.) That same day, Brandeberry and American Telephone
entered into a License Agreement with Burkhalter. (Id. at Ex. 4.)
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Beginning in 1995, Brandeberry continuously marketed the AM/TEL Directory in
Champaign County. (Id. at 66-67.) He published a yellow pages directory for Logan County
from 1998 to 2002, for Union County from 1999 to 2002 and for Madison County from 2000 to
2002. (Id. at 81.) For each of these directories, he used the AMTEL name and marks. (Id. at 81-
82.)
In 2002, Brandeberry’s yellow pages directories business began having cash flow
problems. (Id. 87, 91.) In early 2002, William “Barney” White (“White”) approached
Brandeberry about buying the yellow pages business. (Id. at 92.) Brandeberry provided a list of
what he would have to receive to sell the company. (Id. at 96.) With a few exceptions, White
agreed to this list. (Id. at 97.) On July 3, 2002, Brandeberry and White executed a “Contract for
Sale of Assets.” (Id. Ex. 6.)
Thereafter, from 2002 through 2007, White published annual telephone directories in
Champaign County, Logan County, Union County and Madison County. (Affidavit of William
N. White (“White Aff.”) ¶¶ 8-12 Dec. 22, 2010.) In August 2007, White sold his yellow pages
directory business to Yellow Book. (Id. at ¶ 12.) Yellow Book acquired all of the trademarks and
trade names associated with the business that White acquired from Brandeberry. (Id.) The
acquisition was summarized in a letter dated August 8, 2007 from Yellow Book to BP White
Directories, LLC. (Mitchell Aff. Ex. A.)
In July of 2009, Brandeberry again began marketing a yellow pages directory.
(Brandeberry Dep. 154-55.) He sent letters to approximately 160 businesses in Champaign
County inquiring as to their interest in a new yellow pages directory. (Id. at 156-59.) In this
letter, Brandeberry indicated that he was interested in publishing the AMTEL Champaign
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County Telephone Directory again beginning in March of 2010, and asked these potential
customers whether they would be willing to shift their advertising dollars to a new Champaign
County AMTEL Telephone Directory. (Id. Ex. 9.)
After receiving about 100 responses, Brandeberry began actively soliciting customers for
his new directory (Id. at 158, 169-70.) He developed a mock-up of a telephone book which he
showed to potential customers during sales calls. (Id. at 182-83.) The mock-up used the AMTEL
name and marks. (Id.) Brandeberry also made business cards, envelopes, business documents,
contracts and other stationery that used the AMTEL name and marks. (Id. at 170, 172, 189-90,
191, 192-93; Ex. 5, 11, 14, 15, 16, 17.) In Brandeberry’s correspondence with clients and
potential clients, he represented himself as the “publisher of American Telephone Directories,
Inc., an Ohio-based corporation known as AMTEL” and further asserted that he would be
publishing a “full size and complete May, 2010 AMTEL Champaign County Telephone
Directory.” (Id. at 199,200, Ex. 19.)
In August of 2010, Brandeberry began distribution of his yellow pages directory in
Champaign County. (Id. at 261.) On the cover and throughout the directory, Brandeberry uses
the AMTEL name and marks. (Id. at 261-63, Ex. 28.) The name “American Telephone” also
appears on the correspondence and on the cover of the telephone book. (Id.) Yellow Book filed
its original Complaint in response to Brandeberry’s efforts to produce his new yellow-pages
telephone directory.
The Agreements
The Corporate Asset Purchase Agreement
On May 6, 1994, Area Marketing Telephone Directories, Inc. entered into an agreement
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with Brandeberry and American Telephone to sell certain assets. Area Marketing Telephone
Directories was the seller and Brandeberry and American Telephone the buyers. The agreement
was for the sale of, among other things, all of the customer lists and sales records of Area
Marketing Telephone Directories used for the most recent edition of the Champaign County
Telephone Directory. This agreement also included Area Marketing’s goodwill established over
the last twelve (12) years in Champaign County, Ohio.
The purchase price included a down payment and specified monthly payments beginning
in June of 1994 and extending until the purchase price is fully paid.1All of the capital stock of
American Telephone was pledged as security for the timely performance of the purchaser’s
obligations. Mortgages on certain of Brandeberry’s real estate and a life insurance policy were
also pledged. The assets were to be returned to Area Marketing in the event of a default on the
payments that was not timely cured. This agreement is signed by Burkhalter as President of Area
Marketing Telephone Directories, Inc. and by Brandeberry as an individual and as the President
of American Telephone.
The License Agreement
Also, on May 6, 1994, Burkhalter licensed American Telephone and Brandeberry to use
the name, insignia and logo AM/TEL and AM/TEL DIRECTORIES. This agreement notes that
“Burkhalter has developed a distinctive name, insignia and logo, entitled AM/TEL2 which has
been used in the Champaign County telephone directory for years.” Burkhalter licensed
1
Brandeberry paid the required installments in full. (Brandeberry Dep. 55, 60-61.)
2
After acquiring the company and the right to use the AM/TEL name and mark,
Brandeberry changed the look of the logo by removing the slash from AM/TEL, thereby making
the logo AMTEL. (Brandeberry Dep. 66-67.)
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American Telephone and Brandeberry for “the exclusive use of licenses throughout Champaign
County, Ohio until Burkhalter has received payment in full of all monies due him on a certain
asset purchase agreement, consulting agreement and covenant not to compete agreement.”3 After
the payments were made, American Telephone and Brandeberry became the owner of the name,
insignia and logo.
The License also included monthly payments beginning in June of 1994 and extending
until the license fee was fully paid. The license automatically expired in the event of default. The
License Agreement was signed by Brandeberry for himself and for American Telephone and by
Burkhalter.
Contract for Sale of Assets
On July 3, 2002, AM-TEL DIRECTORIES, INC. sold the assets of the business to P.B.J.
WHITE DIRECTORIES, LLC. P.B.J. WHITE DIRECTORIES, LLC acquired the assets “in
their entirety” as set forth in Exhibit A to this Contract. P.B.J. WHITE DIRECTORIES, LLC
also acquired the right to use the name AM-TEL DIRECTORIES. This agreement was signed on
July 3, 2002, by Brandeberry for AMTEL DIRECTORIES, INC.4 and by William N. White for
P.B.J. WHITE DIRECTORIES, LLC.5
Letter Agreement
3
Brandeberry paid Burkhalter the fee associated with the License Agreement, and,
therefore, became the owner of the AMTEL name and marks. (Brandeberry Dep. 75.)
4
Brandeberry testified that he signed the contract “as is,” and did not notice the his
company was misnamed AMTEL Directories, Inc. and AM-TEL Directories therein.
(Brandeberry Dep. 107-10.) Brandeberry’s company was actually American Telephone.
5
White changed the corporate name from P.B.J. White Directories, LLC to B.P. White
Directories, LLC shortly after the transaction with Brandeberry. (Deposition of William White 9,
30 Jan. 26, 2011.)
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On August 8, 2007, Yellow Book set forth an agreement with BP White Directories LLC
d/b/a Amtel Directories, to purchase all of BP White Directories’ assets relating to the
publication and distribution of BP White Directories’ Champaign County, Logan County, Union
County and Madison County yellow-pages telephone directories. The purchase included, among
other things, trademarks, trade names and copyrights and specifically BP White Directories’
right, title and interest in the names “Amtel Directories.” This Letter Agreement was signed for
Yellow Book by its Senior Vice President-Mergers and Acquisitions. It was also signed by
William N. White as the owner and CEO of BP White Directories LLC and by William N. White
and Amy O’Connor as individuals.
In addition to the Letter Agreement, on August 8, 2007, BP White Directories d/b/a
Amtel Directories delivered a Bill of Sale of its assets to Yellow Book. The Bill of Sale was
executed pursuant to the Letter Agreement. Finally, on August 8, 2007, William N. White
certified that he was the owner and Chief Executive Officer of BP White Directories.
LEGAL PROVISIONS
The standard of review applicable to motions for summary judgment is established by
Federal Rule of Civil Procedure 56 and the associated caselaw. Rule 56 provides that summary
judgment “shall be rendered forthwith if the pleadings, depositions, answers to interrogatories,
and admissions on file, together with the affidavits, if any, show that there is no genuine issue as
to any material fact and that the moving party is entitled to a judgment as a matter of law.”
Fed.R.Civ.P. 56(c).
Alternatively, summary judgment is denied “[i]f there are any genuine factual issues that
properly can be resolved only by a finder of fact because they may reasonably be resolved in
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favor of either party.” Hancock v. Dodson, 958 F.2d 1367, 1374 (6th Cir. 1992)(quoting
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986)). Thus, summary judgment must be
entered “against a party who fails to make a showing sufficient to establish the existence of an
element essential to that party’s case, and on which that party will bear the burden of proof at
trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
The party seeking summary judgment has the initial burden of informing the court of the
basis for its motion and identifying those portions of the pleadings, depositions, answers to
interrogatories, and admissions on file together with the affidavits which it believes demonstrate
the absence of a genuine issue of material fact. Id. at 323. The burden then shifts to the
nonmoving party who “must set forth specific facts showing that there is a genuine issue for
trial.” Anderson, 477 U.S. at 250 (quoting Fed. R. Civ. P. 56(e)).
Once the burden of production has shifted, the party opposing summary judgment cannot
rest on its pleadings or merely reassert its previous allegations. It is not sufficient to “simply
show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus.
Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). Rule 56 “requires the nonmoving
party to go beyond the [unverified] pleadings” and present some type of evidentiary material in
support of its position. Celotex Corp., 477 U.S. at 324.
In determining whether a genuine issue of material fact exists, a court must assume as
true the evidence of the nonmoving party and draw all reasonable inferences in the favor of that
party. Anderson, 477 U.S. at 255. If the parties present conflicting evidence, a court may not
decide which evidence to believe by determining which parties’ affiants are more credible. 10A
Wright & Miller, Federal Practice and Procedure, §2726. Rather, credibility determinations
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must be left to the fact-finder. Id.
However, the mere existence of a scintilla of evidence in support of the nonmoving party
is not sufficient to avoid summary judgment. Anderson, 477 U.S. at 252. “There must be
evidence on which the jury could reasonably find for the plaintiff.” Id. The inquiry, then, is
whether reasonable jurors could find by a preponderance of the evidence that the nonmoving
party is entitled to a verdict. Id.
Finally, in ruling on a motion for summary judgment, “[a] district court is not
…obligated to wade through and search the entire record for some specific facts that might
support the nonmoving party’s claim.” InterRoyal Corp. v. Sponseller, 889 F.2d 108, 111 (6th
Cir. 1989), cert. denied, 494 U.S. 1091 (1990). Thus, in determining whether a genuine issue of
material fact exists on a particular issue, the court is entitled to rely upon the Rule 56 evidence
specifically called to its attention by the parties. The Rule 56 evidence includes the verified
pleadings, depositions, answers to interrogatories and admissions on file, together with any
affidavits submitted. Fed. R. Civ. P. 56(c).
Beyond the standard of review, Brandeberry refers to four axioms of law. In support, he
cites only three cases in his first Motion for Summary Judgment, none in his Second and none in
his Third. He first cites Hunker v. Whitacre-Greer Fireproffing Co., 801 N.E.2d 469 (Ohio Ct.
App. 2003). Therein, the Ohio Court of Appeals found that the term “non-exclusive” in a
contract permitting fox hunting meant that other people can fox hunt and the holder of the
contract does not have the power to exclude others from fox hunting. Brandeberry next cites
Long Beach Association, Inc. v. Jones, 697 N.E.2d 208 (Ohio 1998). Therein, the Ohio Supreme
Court held that, where the terms of a contract are clear and unambiguous, a court cannot in effect
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create a new contract by finding an intent not expressed in the clear language used by the parties.
Brandeberry’s final cite is to McKay Machine Co. v. Rodman, 228 N.E.2d 304 (Ohio 1967).
Therein, the Ohio Supreme Court found that, where a contract is ambiguous, the language of the
contract is construed strictly against the party who prepared it. Brandeberry’s fourth axiom is
that no one can convey that which he does not own. However, he cites no law or authority, other
than himself, for this axiom.
ANALYSIS
Yellow Book’s claims are based upon its assertion that, in August of 2007, it acquired
from BP White Directories, LLC d/b/a Amtel Directories (“White/Amtel”) the exclusive use of
the AMTEL name, marks and related assets regarding the Amtel yellow pages directories in
Champaign, Logan, Union and Madison Counties of Ohio. The asset purchase agreement,
according to Yellow Book, transferred to it all of White/Amtel’s right, title and interest in all
trademarks, trade names, URLs, customer lists, mailing lists and all other rights related to the
publication and distribution of the telephone directories. Yellow Book alleges that Brandeberry,
a former employee of White/Amtel, is now using various White/Amtel trademarks and goodwill
without its permission.
The only argument offered by Brandeberry is that Yellow Book does not have the
exclusive right to the use of White/Amtel’s trademarks and goodwill. He asserts that, as an
individual, he has a license to use the name, insignia and logo “AM-TEL” and “AM-TEL
DIRECTORIES,” and that he did not transfer this exclusive right to P.B.J. White Directories,
LLC. Thus, before Yellow Book’s claims are addressed, the Court must first consider whether
P.B.J. White Directories purchased an exclusive right to the Amtel name and marks from
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Brandeberry.
Ownership of AM/TEL and AM/TEL DIRECTORIES
Brandeberry’s first argument is that he, individually, and American Telephone, his
company, both purchased the exclusive right to the AMTEL name, mark and related assets from
Burkhalter. This assertion is confirmed by a plain reading6 of the Corporate Asset Purchase
Agreement and the License Agreement.
The Corporate Asset Purchase Agreement, which transfers assets used in the selling of
the Champaign County Telephone Directory, is between Area Marketing Telephone Directories,
Inc., Burkhalter’s company, and Brandeberry, individually, and American Telephone,
Brandeberry’s company. It is signed by Brandeberry as an individual and by Brandeberry as the
President of American Telephone.
The License Agreement grants an exclusive license to use the AM/TEL and AM/TEL
DIRECTORIES name, insignia and logo to American Telephone and to Brandeberry. The
License Agreement is signed by Brandeberry individually and by Brandeberry as the President
of American Telephone.
Yellow Book offers no argument regarding what entity or entities received the AM/TEL
and AM/TEL Directories name, insignia and logo from Burkhalter. Thus, both Brandeberry, as
an individual, and American Telephone obtained the exclusive use of the AM/TEL and
AM/TEL DIRECTORIES name, insignia and logo from Burkhalter.
6
“Where the terms in a contract are not ambiguous, courts must apply the plain language
of the contract.” Savedoff v. Access Group, Inc., 524 F.3d 754, 763 (6th Cir. 2008)(citing City of
St. Marys v. Auglaize County Board of Commissioners, 875 N.E.2d 561, 566 (Ohio 2007)). In
this case, the Court does not find the terms of the contracts at issue to be ambiguous and neither
Party argues otherwise.
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Brandeberry next agues that only American Telephone and not he, as an individual, sold
the AMTEL name, marks and related assets to P.B.J. White Directories. This argument is
supported by a plain reading of the Contract for Sale of Assets.
The Contract for Sale of Assets provides that P.B.J. White Directories, LLC will acquire
the assets, in their entirety, of AM-TEL Directories, Inc. The Contract for Sale of Assets is
signed by Brandeberry for AMTEL Directories, Inc. and is signed by White for P.B.J. White
Directories, LLC.
Since Brandeberry testified that he signed the contract “as is,” and did not notice that his
company was misnamed AMTEL Directories, Inc. and AM-TEL Directories therein
(Brandeberry Dep. 107-10), and since Brandeberry’s company was actually American
Telephone, the Court will assume that the parties intended that American Telephone was selling
its assets, in their entirety, to P.B.J. White. Irregardless, pursuant to a plain reading of the
Contract for Sale of Assets, the assets of American Telephone were sold to P.B.J. White
Directories, LLC. There is no evidence that Brandeberry sold any assets that he may have
owned, as an individual, to P.B.J. White Directories, LLC.
The Letter Agreement provides for the sale of all of BP White Directories, LLC’s assets
to Yellow Book, including all of BP White’s interest in the name “Amtel Directories.” Thus,
according to a plain reading of the letter agreement, BP White sold all of the assets that it owned
to Yellow Book. However, BP White did not own any interest that Brandeberry, as an individual,
may have had so Yellow Book does not own any interest that Brandeberry, as an individual, may
have had. According to a plain reading of the contracts presented as evidence by the Parties,
Brandeberry did not transfer any interest that he held as an individual to anyone.
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But what about American Telephone? A plain reading of the Contract for Sale of Assets
provides that P.B.J. White acquired the assets, in their entirety, of American Telephone. The
assets being acquired are also listed in Exhibit A to the Contract. One of the assets listed is
“Intan. Asset Asset Purchase” and another is “Intan. Asset License Agrmt.” From this, the Court
concludes that the sale by American Telephone to P.B.J. White included American Telephone’s
ownership of the exclusive use of the AM/TEL name, marks, and related assets. Thus, pursuant
to the Contract for Sale of Assets, American Telephone gave up its right to use the AM/TEL
name, marks and related assets and sold those rights to P.B.J. White Directories, LLC.
American Telephone is one of the Defendants in this case. American Telephone has
given up their ownership of the AM/TEL name, marks and related assets. However,
Brandeberry’s individual interest in the AM/TEL name, marks and related assets faces one more
challenge.
Yellow Book argues that Brandeberry has abandoned his rights in the AM/TEL name,
marks and related assets. Section 1127 of Title 15 of the United States Code provides, in relevant
part, that a mark is deemed to be abandoned:
[w]hen its use has been discontinued with intent not to resume such use. Intent
not to resume may be inferred from circumstances. Nonuse for 3 consecutive
years shall be prima facie evidence of abandonment. “Use” of a mark means the
bona fide use of such mark made in the ordinary course of trade, and not made
merely to reserve a right to a mark.
Brandeberry asserts that abandonment of a trademark by an owner can cause the owner to
lose his right to sue a new user for infringement, but it does not deprive the owner of the right to
use. However, Brandeberry has cited no caselaw in support of this assertion and the Court is
unable to find any.
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Courts have determined that trademark rights derive from the use of the trademark in
commerce and not from the registration of the mark. Sands, Taylor & Wood Co. v. The Quaker
Oats Co., 978 F.2d 947, 954 (7th Cir. 1992). Further, the owner of a mark will lose the exclusive
use of a mark if the owner fails to actually use the mark. Id. at 954-55. But it is not Brandeberry,
in this case, who is claiming exclusive use of the AM/TEL name, marks and related assets. It is
Yellow Book.
Further, courts treat the abandonment of a trademark as a defense to an infringement
claim. See Saxlehner v. Eisner & Mendelson Co., 179 U.S. 19, 31 (1900). And, again, it is not
Brandeberry who has brought the infringement claim in this case. Abandonment is not
Brandeberry’s defense.
Thus, while Yellow Book’s argument that it is entitled to exclusive use of the AM/TEL
name, marks and related assets because Brandeberry has abandoned the use of AM/TEL, may be
relevant as a defense to a trademark lawsuit brought by Brandeberry, it is not relevant to a
lawsuit that Yellow Book has brought. Yellow Book is not entitled to exclusive use of the
AM/TEL name, marks and related assets because Brandeberry is also entitled to the use of these
same AM/TEL names, marks and related assets.
Defendant’s Motion for Summary Judgment
This Motion for Summary Judgment (doc. #41) is written as a motion for summary
judgment made by Brandeberry. To the extent that it is a motion for summary judgment brought
by Brandeberry, the Motion is granted. Brandeberry has not contractually given up the right to
use the AM/TEL name, marks and related assets. Thus, Yellow Book’s complaint, which is
based upon Yellow Book having an exclusive right to the AM/TEL name, marks and related
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assets, against him fails.
There are no genuine issues of material fact and Brandeberry is entitled to judgment as a
matter of law on Yellow Book’s claims. Brandeberry’s Motion for Summary Judgment (doc.
#41) is GRANTED.
Plaintiffs’ Motion for Partial Summary Judgment
Yellow Book seeks summary judgment on their claims for trademark infringement (First,
Second and Third Claims for Relief) and tortious interference with business relations against
Brandeberry and American Telephone. Each will be addressed seriatim.
Trademark Infringement
Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), provides a federal cause of action
for infringement of marks and trade dress that have not obtained federal registration. See Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). Section 43(a) provides for actions
for trademark infringement because the use of another’s trademark, name, symbol or device, may
create confusion as to the “origin” of the goods or as to an “affiliation, connection, or
association” between the user and the owner of the trademark, name, symbol or device.7
Worthington Foods, Inc. v. Kellogg Co., 732 F. Supp. 1417, 1430 (S.D. Ohio 1990).
In this case, as determined above, Brandeberry has not given up his right to use the
AM/TEL name, marks and related assets. Thus, Yellow Book cannot show that it is entitled to
protection of the AM/TEL name, marks and related assets from their use by Brandeberry.
7
Ohio’s Deceptive Trade Practices Act, Ohio Rev. Code § 4165.02, mirrors federal
trademark law and the analysis is the same as for a claim brought under section 43(a) of the
Lanham Act. Worthington Foods, Inc. v. Kellogg Co., 732 F. Supp. 1417, 1431 (S.D. Ohio
1990).
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However, Yellow Book now owns the rights to the AM/TEL name, marks and related
assets that American Telephone previously owned. Yet, Yellow Book does not have the
exclusive right to the use of the AM/TEL name, marks and related assets. Thus, Yellow Book
cannot sustain a trademark infringement action against American Telephone either.
Tortious Interference With Business Relations
Tortious interference with contract claims (existing business relations) arise where a
defendant “intentionally and improperly interferes with the performance of a contract between
another and a third person by inducing or otherwise causing the third person not to perform the
contract. Fred Siegel Co., L.P.A. v. Arter & Hadden, 707 N.E.2d 853, 858 (Ohio 1999). The
elements of a tortious interference with contract claim are: (1) the existence of a valid contract;
(2) the wrongdoer’s knowledge of the contract; (3) the wrongdoer’s intentional procurement of
the contract’s breach; (4) the lack of justification; and (5) resulting damages. Id. Tortious
interference with prospective business relations claims are similar, but involve interference with
a prospective business relationship rather than a contract. See Tomazic v. City of Sandusky, No.
E-08-037, 2008 WL 5050432 at *2 (Ohio Ct. App. Nov. 26, 2008).
Ohio law imposes the burden of proving “lack of privilege” or “improper interference”
on the plaintiff. Id. Also, once a privilege is shown, “actual malice” must be demonstrated to
defeat the privilege. Smith v. Ameriflora 1992, Inc., 644 N.E.2d 1038, 1044 (Ohio Ct. App.
1994).
When determining whether an actor’s conduct is improper, or lacks justification,
consideration is given to the following factors: (1) the nature of the actor’s conduct; (2) the
actor’s motive; (3) the interest of the other with which the actor’s conduct interferes; (4) the
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interest sought to be advanced by the actor; (5) the proximity or remoteness of the actor’s
conduct to the interference; (6) the social interests in protecting the freedom of contract and the
interference with such; and (7) the relations between the parties. Siegel, 707 N.E.2d at 860. Fair
competition may constitute a justification for an interference, and, where fair competition is
established, the preceding factors need not be considered. Id.
Yellow Book claims that Brandeberry was aware of Yellow Book’s business relations
and advertising contracts with Yellow Book’s customers in Champaign County. This assertion is
supported by the evidence that Brandeberry himself sought to re-enter that market to sell a
competing yellow pages directory.
Further, Brandeberry approached a significant number of Yellow Book’s customers, and
sold them advertising in his competing yellow pages directory while representing that his
directory was the “new” Amtel directory in Champaign County. According to Yellow Book,
Brandeberry competed improperly by passing off his directory as that of Yellow Book. Finally,
Yellow Book asserts that summary judgment on Yellow Book’s intentional interference claims is
appropriate for all of the same reasons as Yellow Book’s trademark infringement claims.
There is evidence that Brandeberry interfered with Yellow Book’s contracts and business
relationships. However, Yellow Book has not shown that Brandeberry’s interference was not
justified. Brandeberry, of course, may compete with Yellow Book, and Yellow Book does not
have the exclusive right to use the AM/TEL name, marks and related assets. Yellow Book has
not shown that Brandeberry’s interference was not fair competition.
The evidence indicates that American Telephone was also aware of Yellow Book’s
advertising contract with Yellow Book’s customers in Champaign County. Further, the material
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used to approach Yellow Book’s customers uses the AM/TEL name and mark and indicates that
the “new” directory would be published by American Telephone. The “new” directory also has
the name American Telephone on the cover.
Since American Telephone had given up its right to use the AM/TEL name, marks and
related assets, American Telephone’s interference is not justified. Except for proof of damages,
the remaining elements of Yellow Book’s tortious-interference claim against American
Telephone are also satisfied by unrefuted evidence.
Conclusion
There are no genuine issues of material fact and Yellow Book is not entitled to judgment
as a matter of law on its trademark infringement and tortious interference claims against
Brandeberry. Further, there are no genuine issues of material fact and Yellow Book is not
entitled to judgment as a matter of law on its trademark infringement claims against American
Telephone. However, there are no genuine issues of material fact and Yellow Book is entitled to
judgment as a matter of law on its tortious interference claim against American Telephone. Thus,
Yellow Book’s Motion for Partial Summary Judgment (doc. #47) is GRANTED IN PART and
OVERRULED IN PART.
SUMMARY
Yellow Book is not entitled to the exclusive use of the AM/TEL name, marks and related
assets. Thus, none of Yellow Book’s claims against Brandeberry are actionable. However,
Yellow Books tortious interference claim against American Telephone is actionable and Yellow
Book is granted summary judgment on the liability portion of this claim.
Brandeberry’s Motion for Summary Judgment (doc. #41) is GRANTED. Yellow Book’s
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Motion for Partial Summary Judgment (doc. #47) is GRANTED IN PART and OVERRULED
IN PART. Yellow Book’s misappropriation of trade secrets and unjust enrichment claims against
American Telephone remain to be adjudicated as does Yellow Book’s damages on its tortious
interference claim against American Telephone.
DONE and ORDERED in Dayton, Ohio this Third day of May, 2011.
s/Thomas M. Rose
_______________________________
THOMAS M. ROSE
UNITED STATES DISTRICT JUDGE
Copies furnished to:
Counsel of Record
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Yellow Book V Brandeberry Opinion

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UNITED STATES DISTRICT COURT

YELLOW BOOK USA, INC., et al.,

ENTRY AND ORDER GRANTING BRANDEBERRY’S MOTION FOR

The Defendants are Steven M. Brandeberry (“Brandeberry”) and American Telephone

Directories, Inc. (“American Telephone”).

false statements. (Doc. #9.)

and 30), but no mention is made of a counterclaim.

Counterclaim. (Doc. #48). This Motion will be considered in a separate entry.

Yellow Book is an independent publisher of print and Internet-based yellow-pages

Champaign county known as the AM/TEL Directory. (Deposition of Steven M. Brandeberry

Marketing Telephone Directory. (Id. at 35.)

In 1994, Burkhalter approached Brandeberry about purchasing Burkhalter’s Champaign

entered into a License Agreement with Burkhalter. (Id. at Ex. 4.)

Beginning in 1995, Brandeberry continuously marketed the AM/TEL Directory in

Sale of Assets.” (Id. Ex. 6.)

Directories, LLC. (Mitchell Aff. Ex. A.)

In July of 2009, Brandeberry again began marketing a yellow pages directory.

(Brandeberry Dep. 154-55.) He sent letters to approximately 160 businesses in Champaign

County AMTEL Telephone Directory. (Id. Ex. 9.)

potential clients, he represented himself as the “publisher of American Telephone Directories,

Directory.” (Id. at 199,200, Ex. 19.)

In August of 2010, Brandeberry began distribution of his yellow pages directory in

The Corporate Asset Purchase Agreement

the last twelve (12) years in Champaign County, Ohio.

The License Agreement

insignia and logo.

Contract for Sale of Assets

P.B.J. WHITE DIRECTORIES, LLC.5

and Amy O’Connor as individuals.

In addition to the Letter Agreement, on August 8, 2007, BP White Directories d/b/a

The standard of review applicable to motions for summary judgment is established by

judgment “shall be rendered forthwith if the pleadings, depositions, answers to interrogatories,

trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).

trial.” Anderson, 477 U.S. at 250 (quoting Fed. R. Civ. P. 56(e)).

support of its position. Celotex Corp., 477 U.S. at 324.

must be left to the fact-finder. Id.

party is entitled to a verdict. Id.

affidavits submitted. Fed. R. Civ. P. 56(c).

than himself, for this axiom.

without its permission.

Ownership of AM/TEL and AM/TEL DIRECTORIES

Agreement and the License Agreement.

Inc., Burkhalter’s company, and Brandeberry, individually, and American Telephone,

Brandeberry’s company. It is signed by Brandeberry as an individual and by Brandeberry as the

President of American Telephone.

License Agreement is signed by Brandeberry individually and by Brandeberry as the President

AM/TEL DIRECTORIES name, insignia and logo from Burkhalter.

supported by a plain reading of the Contract for Sale of Assets.

owned, as an individual, to P.B.J. White Directories, LLC.

part, that a mark is deemed to be abandoned:

unable to find any.

Further, courts treat the abandonment of a trademark as a defense to an infringement

relevant as a defense to a trademark lawsuit brought by Brandeberry, it is not relevant to a

same AM/TEL names, marks and related assets.

Defendant’s Motion for Summary Judgment

assets, against him fails.

Plaintiffs’ Motion for Partial Summary Judgment

Brandeberry and American Telephone. Each will be addressed seriatim.

create confusion as to the “origin” of the goods or as to an “affiliation, connection, or

cannot sustain a trademark infringement action against American Telephone either.

Tortious Interference With Business Relations